Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1106053
`01/06/2021
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous ex-
`tension
`Address
`
`Attorney informa-
`tion
`
`Apple Inc.
`01/06/2021
`
`ONE APPLE PARK WAY
`CUPERTINO, CA 95014
`UNITED STATES
`
`J. DAVID MAYBERRY
`KILPATRICK TOWNSEND & STOCKTON LLP
`1114 AVENUE OF THE AMERICAS, 21ST FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary Email: DMayberry@kilpatricktownsend.com
`Secondary Email(s): DMayberry@kilpatricktownsend.com,
`sstadler@kilpatricktownsend.com, Agarcia@kilpatricktownsend.com, tmad-
`min@kilpatricktownsend.com
`212-775-8700
`
`Docket Number
`
`Applicant Information
`
`Application No.
`Opposition Filing
`Date
`Applicant
`
`88652398
`01/06/2021
`
`Publication date
`Opposition Peri-
`od Ends
`
`09/08/2020
`01/06/2021
`
`Pod Shedz LLC
`12041 E GOLD DUST AVE
`SCOTTSDALE, AZ 85259
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 2019/09/24 First Use In Commerce: 2019/09/24
`All goods and services in the class are opposed, namely: Earphone accessories, namely, earphone
`cases; Protective cases for audio equipment in the nature of wireless headphone cases
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution by blurring
`
`Trademark Act Section 2(d)
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`

`

`U.S. Registration
`No.
`Registration Date
`
`2835698
`
`04/27/2004
`
`Application Date
`
`10/18/2001
`
`Foreign Priority
`Date
`
`08/31/2001
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`IPOD
`
`NONE
`
`Class 009. First use: First Use: 2001/10/23 First Use In Commerce: 2001/10/23
`portable and handheld digital electronic devices for recording, organizing, trans-
`mitting, manipulating, and reviewing audio files; computer software for use inor-
`ganizing, transmitting, manipulating,and reviewing audio files on portable and
`handheld digital electronic devices
`
`U.S. Registration
`No.
`Registration Date
`
`3089360
`
`05/09/2006
`
`Application Date
`
`10/18/2001
`
`Foreign Priority
`Date
`
`08/31/2001
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`IPOD
`
`NONE
`
`Class 009. First use: First Use: 2001/10/23 First Use In Commerce: 2001/10/23
`Portable and handheld digital electronic devices for recording, organizing, trans-
`mitting, manipulating, and reviewing text, data, and audio files; computer soft-
`ware for use in organizing, transmitting, manipulating, and reviewing text, data,
`and audio files on portable and handheld digital electronic devices
`
`U.S. Registration
`No.
`Registration Date
`
`3341191
`
`11/20/2007
`
`Application Date
`
`06/18/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`IPOD
`
`NONE
`
`Class 009. First use: First Use: 2001/10/23 First Use In Commerce: 2001/10/23
`full line of electronic and mechanical parts and fittings for portable and handheld
`digital electronic devices for recording, organizing, transmitting, manipulating,
`and reviewing text, data, audio and video files; electronic docking stations;
`stands specially designed for holding portable and handheld digital electronic
`devices; battery chargers; battery packs; electrical connectors, wires, cables,
`and adaptors; [ wired and wireless remote controls for portable and handhelddi-
`gital electronic devices; ] headphones and earphones; stereo amplifier and
`speaker base stations; [ automobile stereoadapters;] audio recorders; radio re-
`ceivers; radio transmitters; [ video viewers, namely, video monitors for portable
`and handheld digital electronic devices; ] and computer software for portable
`andhandheld digital electronic devices forrecording, organizing, transmitting,
`manipulating, and reviewing text, data, audio, image, and video files; computer
`application software for recording and organizing calendars and schedules, to-
`do lists, and contact information; computer game software; and, computer soft-
`ware for clock and alarm clock functionality; carrying cases, all for use with port-
`ableand handheld digital electronic devicesfor recording, organizing, transmit-
`
`

`

`ting, manipulating, and reviewing text, data, audio, image, and video files
`
`U.S. Registration
`No.
`Registration Date
`
`3497047
`
`09/02/2008
`
`Application Date
`
`06/18/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`IPOD
`
`NONE
`
`Class 009. First use: First Use: 2002/07/17 First Use In Commerce: 2002/07/17
`[ full line of holders, straps, armbands, and clips for portable and handheld digit-
`al electronic devices for recording,organizing, transmitting, manipulating,and re-
`viewing text, data, audio, image,and video files ] * [ holders, ] straps, [ and arm-
`bands ] for portable and handheld digital electronic devices for recording, organ-
`izing, transmitting, manipulating, and reviewing text, data, audio, image, and
`video files[ ; clips sold as a component feature of portable and handheld digital
`electronic devices for organizing, manipulating and reviewing data and audio
`files * ]
`Class 022. First use: First Use: 2004/10/19 First Use In Commerce: 2004/10/19
`Lanyards for portable and handheld digital electronic devices for recording, or-
`ganizing, transmitting, manipulating, and reviewing text, data, audio, image, and
`video files
`
`U.S. Registration
`No.
`Registration Date
`
`3741470
`
`01/26/2010
`
`Application Date
`
`10/03/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`IPOD
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`(Based on 44(d) Priority Application) (Based on 44(e)) Portable and handheld di-
`gital electronic devices for recording, organizing, transmitting, receiving, manipu-
`lating, playing and reviewing text, data, image, audio and video files; computer
`software for use in organizing, transmitting, receiving, manipulating, playing and
`reviewing text, data, image, audio, and video files on portable and handheld di-
`gital electronic devices; a full line of electronic and mechanical parts and fittings
`for portable and handheld digital electronic devices for recording, organizing,
`transmitting, receiving, manipulating, playing and reviewing text, data, image,
`audio and video files; electronic docking stations; stands speciallydesigned for
`holding portable and handheld digital electronic devices; battery chargers; bat-
`tery packs; electrical connectors, wires, cables, and adaptors; wired and wire-
`less remote controls for portable and handheld digital electronic devices; head-
`phones and earphones; stereo amplifier and speaker base stations; automobile
`stereo adapters; audio recorders;radio receivers; radio transmitters; image scan-
`ners; [ video viewers, namely, video monitors for portable and handheld digital
`electronic devices; electronic memory card readers; ] a full line of computer soft-
`ware for portable and handhelddigital electronic devices for recording, organiz-
`ing, transmitting, receiving, manipulating, playing and reviewing text, data, au-
`dio, image, and video files; computer application software for recording and or-
`ganizing calendars and schedules, to-do lists, and contact information;computer
`game software; computer software for clock and alarm clock functionality; [ car-
`
`

`

`rying cases, sacks, and bags, all for use with portable and handheld digital elec-
`tronic devices; a full line ofholders, straps, armbands, and clips for portable and
`handheld digital electronics; computers, computer peripherals, hand held com-
`puters, computer terminals, personal digital assistants, electronic organizers,
`electronic notepads, apparatus for recording, transmission and reproduction of
`text, data, image, audio, and video; ] [ blank magnetic data carriers;] micropro-
`cessors, memory boards, computer and video monitors, liquid crystal displays,
`keyboards, electrical cables, [modems, printers, ] digital disk drives; cameras;
`computer software and prerecorded computer programs for personal information
`management, database management software, electronic mail and messaging
`software; paging software; database synchronization software, computer pro-
`grams for accessing, browsing and searching online databases; computer soft-
`ware and firmware for operating system programs; data synchronization pro-
`grams; [ computer software application development tool programs; ] adapters, [
`computer card adapters, ] cable and electric connectors and computer hard
`drives; blank random access electronic memory, read only electronic memory;
`solid state electronic memory; user manuals in electronically readable, machine
`readable or computer readable form for use with, and sold as a unit with, all the
`aforementioned goods; downloadable electronic publications in the nature of
`books, [ magazines, pamphlets,]brochures [, newsletters, journals
`andmagazines ] in the fields of [ sportingand cultural events, ] computer hard-
`ware and software applications, [ K-12 education and university-level subjects, ]
`and a wide range of topics of general interest
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`[ (Based on 44(d) Priority Application)(Based on 44(e)) Printed materials and
`publications, namely, books, magazines, newsletters, brochures, booklets,
`pamphlets, manuals, journals, leaflets, greeting cards, and catalogues all relat-
`ing tocomputer software, computer hardware, consumer electronics, digital tech-
`nology,telecommunications, on-line retailing, entertainment, music, movies and
`video, and multimedia apparatus and instruments; pens and pencils, clipboards,
`posters,memo pads, binders ]
`Class 028. First use: First Use: 0 First Use In Commerce: 0
`(Based on 44(d) Priority Application) (Based on 44(e)) Hand-held unit for playing
`electronic games
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`(Based on 44(d) Priority Application) (Based on 44(e)) Retail store services and
`retail store services provided via communications networks featuring computers,
`computer software, computer peripherals and consumer electronics, [ and pre-
`recorded music, ] audio-visual and music-related products; product demonstra-
`tions provided [ in-store and ] via communications networks; providing informa-
`tion andconsultation in connection with all of the foregoing
`Class 038. First use: First Use: 0 First Use In Commerce: 0
`(Based on 44(d) Priority Application) (Based on 44(e)) Telecommunication ac-
`cessservices; communication by computer; transmission of data and of informa-
`tion byelectronic means, [ broadcasting or transmission of radio and television
`programs; ] provision of telecommunications connections to computer databases
`and the Internet; electronic transmission of streamed and downloadable audio
`and video files via computer and other communications networks; [ web casting
`services; ] delivery of messages by electronic transmission; provision of tele-
`communications connections to electronic communicationsnetworks, for trans-
`mission or receptionof audio, video or multimedia content [; streaming of video
`content, streamingand subscription audio broadcasting of spoken word, music,
`concerts, and radio programs, broadcasting prerecorded videos featuring music
`and entertainment, television programs, motion pictures, news,sports, games,
`cultural events, and entertainment-related programs of all kinds, via computer
`and other communications networks; providing on-line bulletin boards for the
`transmission of messages among computer users concerning entertainment in
`
`

`

`the nature of music, concerts, videos, radio, television, film, news, sports, games
`and cultural events; communication services, namely, providing users access to
`communication networks for the transfer of music, video and audio recordings;
`provision of information, consultancy and advisory services for all the aforesaid
`services ]
`Class 039. First use: First Use: 0 First Use In Commerce: 0
`(Based on 44(d) Priority Application) (Based on 44(e)) Computerized data stor-
`age and retrieval services for digital text, data, image, audio, and video works;
`providing information and consultation in connection therewith
`Class 041. First use: First Use: 0 First Use In Commerce: 0
`(Based on 44(d) Priority Application) (Based on 44(e)) [ Educational services in
`the nature of classes and training services offered in-person and over computer
`networks in the fields of K-12 education, university-level subjects, topics ofgen-
`eral interest, and computer hardwareand software applications; entertainment
`services in the nature of providing on-line, non-downloadable musical, video, au-
`dio-video, and textual materials, namely, books, plays, pamphlets, brochures,
`newsletters, journals, and magazines, onthe subjects of sporting and cultural
`activities and a wide range of topics of general interest via computer networks;
`entertainment services, namely, providing a website and database featuring mu-
`sic, musical performances and concerts, videos, films and film clips, book re-
`views,games, sports information and other related multimedia material; ] provid-
`ing on-line non-downloadable publications for browsing over computer networks,
`namely,books, pamphlets, brochures [, newsletters, journals, and magazines, ]
`on the subjects of computer hardware and software applications and a wide
`range of topics of general interest; [ editing of audio-tapes; editing of video-
`tapes; editingof written text; editing of photographic images; videotape editing;
`digital imaging services; providing information, advice and consultation services
`relating to all the aforesaid ]
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`(Based on 44(d) Priority Application) (Based on 44(e)) [ Design and develop-
`mentof computer hardware and software; ] computer hardware and software
`consulting services; multimedia and audio-visual software consulting services; [
`computer programming; technical support and consultation services for develop-
`ing computer systems, databases and applications; ] information relating to com-
`puter hardwareor software provided on-line from a global computer network or
`the Internet; [ creating and maintaining web-sites for others; providing search
`engines for obtaining data via communications networks; providing temporary
`use of on-line non-downloadable software to enable users to program audio,
`video, text and other multimedia content, including music, concerts, videos, ra-
`dio, television, news, sports, games, cultural events, and entertainment-related
`programs; providing on-line facilities, via a global computer network, to enable
`users to program audio, video, text and other multimedia content, including mu-
`sic, concerts, videos, radio, television, news, sports, games, cultural events, and
`entertainment-related programs; providing search engines for obtaining data on
`a global computer network; ] computer services, namely, creating indexes of in-
`formation, sites and other resources available on global computernetworks for
`others; [ providing customized on-line web pages featuring user-defined informa-
`tion for the purpose of identifying, locating, grouping, distributing, and managing
`data and links to third-party computer servers, computer processors and com-
`puter users; customized searching, browsing, organizing and retrieving services,
`namely, providing specific information, sites, and other resources available on
`global computer networks according to user preferences as requestedby cus-
`tomers via the global computer networks; ] providing information, advisory and
`consultancy services relating to all the aforesaid
`
`U.S. Registration
`No.
`
`4276122
`
`Application Date
`
`11/23/2004
`
`

`

`Registration Date
`
`01/15/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`IPOD
`
`NONE
`
`Class 035. First use: First Use: 2005/12/31 First Use In Commerce: 2005/12/31
`Retail store services and retail store services provided via communications net-
`works featuring computers, computer software, computer peripherals and con-
`sumer electronics, and audio-visual and music-related products; product demon-
`strationsprovided [ in-store and ] via communications networks; information and
`consultation in connection with all of the foregoing
`
`U.S. Registration
`No.
`Registration Date
`
`4361692
`
`07/02/2013
`
`Application Date
`
`11/23/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`IPOD
`
`NONE
`
`Class 039. First use: First Use: 2011/10/12 First Use In Commerce: 2011/10/12
`Computerized data storage and retrievalservices for digital music, photographs,
`and audio-visual and text works; information and consultation in connection
`therewith
`
`5268740
`
`08/22/2017
`
`AIRPODS
`
`NONE
`
`Application Date
`
`09/22/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Class 009. First use: First Use: 2016/09/07 First Use In Commerce: 2016/12/19
`Sound reproducing apparatus; audio speakers; earphones; headphones; micro-
`phones; voice recording apparatuses, namely, digital voice recorders; voice re-
`cognition apparatuses, namely, microphones for receiving voice data; radios, ra-
`dio transmitters, and radio receivers; remote controls for controlling handheld di-
`gital electronic devices for use as a telephone, handheld computer, and audio
`and videoplayer; wireless communication devices for voice or data transmission;
`and remote control apparatus, battery chargers, electronic connectors, couplers,
`batterychargers, docks being power supplies, electrical and electronic docking
`stations, specially adapted cases, specially adapted cases for battery charging,
`interfaces for computers, handheld or wearabledigital electronic devices, tele-
`phones,mobile phones, and digital media players, and electrical, electronic, and
`poweradapters for use with all of the aforesaid goods
`
`U.S. Registration
`No.
`Registration Date
`
`6105859
`
`07/21/2020
`
`Application Date
`
`10/31/2019
`
`Foreign Priority
`Date
`
`06/13/2019
`
`

`

`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`AIRPODS PRO
`
`NONE
`
`Class 009. First use: First Use: 2019/10/28 First Use In Commerce: 2019/10/28
`Wireless communication devices for the transmission of voice, data, and audio
`content; peripheral devices for computers; sound reproducing apparatus; digital
`audio players; apparatus for voice recording and also voice recognition;
`earphones; headphones; electronic connectors, couplers, chargers, docks,
`docking stations, and adapters, all being accessories to and for use with all of
`the aforesaid goods; microphones; audio speakers; radios; radio transmitters
`and receivers; remote controls for controlling computers,mobile telephones, mo-
`bile electronic devices, wearable electronic devices, smart watches, audio and
`video players and recorders, televisions, speakers, home theatre systems, and
`entertainment systems; wearable devices in the nature of headphones and
`earphones with remote controls for controlling computers, mobile telephones,
`mobile electronic devices, smartwatches, audio and video players and record-
`ers, televisions, speakers, home theatre systems, and entertainment sys-
`tems;interfaces for computers, computer peripherals, mobile telephones, wear-
`able activity trackers, smart watches, televisions, set top boxes, and audio and
`video players and recorders; cases for earphones and headphones; electronic
`voice command and recognition apparatus in the nature of headphones and
`earphones with remote controls for controlling computers, mobile telephones,
`mobile electronic devices, wearable electronic devices, smart watches, audio
`and video players and recorders, televisions, speakers, home theatre systems,
`and entertainment systems
`
`U.S. Application
`No.
`Registration Date
`
`88831036
`
`NONE
`
`Application Date
`
`03/11/2020
`
`Foreign Priority
`Date
`
`09/12/2019
`
`Word Mark
`Design Mark
`Description of
`Mark
`
`Goods/Services
`
`AIRPODS PRO
`
`The mark consists of the words "AirPodsPro" with the letters "A" and "P" in "Air-
`Pods" in upper case, and the letter "P" in "Pro" in upper case, and the remaining
`letters in lower case.
`Class 009. First use: First Use: 2019/10/28 First Use In Commerce: 2019/10/28
`Wireless communication devices for the transmission of voice, data, and audio
`content; peripheral devices for computers; sound reproducing apparatus; digital
`audio players; apparatus for voice recording and also voice recognition;
`earphones; headphones; electronic connectors, couplers, chargers, docks,
`docking stations, and adapters, all being accessories to and for use with all of
`the aforesaid goods; microphones; audio speakers; radios; radio transmitters
`and receivers; remote controls for controlling computers,mobile telephones, mo-
`bile electronic devices, wearable electronic devices, smart watches, audio and
`video players and recorders, televisions, speakers, home theatre systems, and
`entertainment systems; wearable devices in the nature of headphones and
`earphones with remote controls for controlling computers, mobile telephones,
`mobile electronic devices, smartwatches, audio and video players and record-
`ers, televisions, speakers, home theatre systems, and entertainment sys-
`tems;interfaces for computers, computer peripherals, mobile telephones, wear-
`able activity trackers, smart watches, televisions, set top boxes, and audio and
`video players and recorders; cases for earphones and headphones; electronic
`voice command and recognition apparatus in the nature of headphones and
`earphones with remote controls for controlling computers, mobile telephones,
`mobile electronic devices, wearable electronic devices, smart watches, audio
`
`

`

`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`and video players and recorders, televisions, speakers, home theatre systems,
`and entertainment systems
`
`4891107
`
`01/26/2016
`
`EARPODS
`
`NONE
`
`Application Date
`
`10/01/2012
`
`Foreign Priority
`Date
`
`07/11/2012
`
`Class 009. First use: First Use: 2012/09/12 First Use In Commerce: 2012/09/12
`headphones; microphones; remote controlfor controlling audio and video play-
`ersand mobile phones; sound reproducing apparatus
`
`U.S. Registration
`No.
`Registration Date
`
`4891106
`
`01/26/2016
`
`Application Date
`
`09/13/2012
`
`Foreign Priority
`Date
`
`07/17/2012
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`APPLE EARPODS
`
`NONE
`
`Class 009. First use: First Use: 2012/09/12 First Use In Commerce: 2012/09/12
`Headphones; microphones; remote controlfor controlling audio and video play-
`ersand mobile phones; sound reproducing apparatus
`
`6091346
`
`06/30/2020
`
`HOMEPOD
`
`NONE
`
`Application Date
`
`06/13/2017
`
`Foreign Priority
`Date
`
`02/15/2017
`
`Class 009. First use: First Use: 2017/06/05 First Use In Commerce: 2018/01/26
`Audio speakers, amplifiers and receivers; digital audio players; sound reprodu-
`cing apparatus; voice recording and recognition apparatus; microphones; radios,
`radio transmitters, and radio receivers; wireless communication devices for voi-
`ceor data transmission; computer hardwarefor playing, organizing, downloading,
`transmitting, manipulating and reviewing audio files and media files; electronic
`devices capable of providing access to the Internet and for the sending, receiv-
`ing, and storing of digital data; voice-controlled smart audio speakers with virtual
`personal assistant capabilities; personal digital assistant; electronic voice com-
`mand and recognition and remote control devices for controlling and monitoring
`consumer electronics devices, lighting, appliances, thermostats, heating andair
`conditioning systems, alarm and home security and surveillance systems,
`smoke and carbon monoxide detectors, door and window locks and latches, and
`home automation systems
`
`U.S. Registration
`No.
`
`6091347
`
`Application Date
`
`06/13/2017
`
`

`

`Registration Date
`
`06/30/2020
`
`Foreign Priority
`Date
`
`05/17/2017
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`HOMEPOD
`
`The mark consists of "HOMEPOD" with theletters "H" and "P" capitalized, the re-
`maining letters in lowercase.
`Class 009. First use: First Use: 2017/06/05 First Use In Commerce: 2018/01/26
`Audio speakers, amplifiers and receivers; digital audio players; sound reprodu-
`cing apparatus; voice recording and recognition apparatus; microphones; radios,
`radio transmitters, and radio receivers; wireless communication devices for voi-
`ceor data transmission; computer hardwarefor playing, organizing, downloading,
`transmitting, manipulating and reviewing audio files and media files; electronic
`devices capable of providing access to the Internet and for the sending, receiv-
`ing, and storing of digital data; voice-controlled smart audio speakers with virtual
`personal assistant capabilities; personal digital assistant; electronic voice com-
`mand and recognition and remote control devices for controlling and monitoring
`consumer electronics devices, lighting, appliances, thermostats, heating andair
`conditioning systems, alarm and home security and surveillance systems,
`smoke and carbon monoxide detectors, door and window locks and latches, and
`home automation systems
`
`Attachments
`
`Final Notice of Opposition - PODSHEDZ.pdf(2234078 bytes )
`Exhibits to Notice of Opposition - PODSHEDZ.pdf(3419156 bytes )
`
`Signature
`Name
`Date
`
`/Sara K. Stadler/
`Sara K. Stadler
`01/06/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application Serial No.: 88/652,398
`
`Mark:
`
`Filing Date: October 12, 2019
`Publication Date: September 8, 2020
`
`APPLE INC.,
`
`Opposer,
`
`v.
`
`Opposition No. ____________
`
`POD SHEDZ LLC,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Opposer Apple Inc. (“Apple”), a corporation organized and existing under the laws of
`
`California with a principal place of business at One Apple Park Way, Cupertino, California 95014,
`
`hereby opposes registration of the stylized mark shown below (“Applicant’s Mark”) in Application
`
`Serial No. 88/652,398 (the “Application”) and published in the Official Gazette on September 8,
`
`2020.
`
`Apple timely sought extensions of time in which to file this Notice of Opposition and those
`
`extensions were granted.
`
`

`

`As grounds for this Notice of Opposition, Apple alleges as follows:
`
`1.
`
`Apple designs, manufactures, and markets mobile communication and media
`
`devices and sells a variety of related software, services, and accessories, as well as digital content
`
`and applications created by third parties.
`
`2.
`
`Before Applicant Pod Shedz LLC (“Applicant”) applied to register and used
`
`Applicant’s Mark, Apple owned and used a family of marks for audio devices that each share the
`
`suffix “POD.”
`
`3.
`
`Apple’s family of marks include IPOD, EARPODS, AIRPODS, AIRPODS PRO,
`
`and HOMEPOD (the “–POD Family of Marks”). Apple’s –POD Family of Marks share a common
`
`characteristic (the “–POD Formative”).
`
`4.
`
`The common characteristic of Apple’s –POD Family of Marks is distinctive and
`
`neither highly descriptive nor highly suggestive of the audio devices offered under that family.
`
`Consumers and the public associate the –POD Family of Marks for audio devices with a particular
`
`company, namely Apple.
`
`5.
`
`Before Applicant applied to register and used Applicant’s Mark, Apple used,
`
`advertised and marketed its –POD Family of Marks so as to create common exposure to and
`
`recognition by purchasers of the common characteristic indicating origin. Apple advertised and
`
`promoted its audio devices sold under the –POD Family of Marks as companion products coming
`
`from the same source by displaying those products together in promotional materials and in
`
`everyday sales activities, including in retail outlets in which they are sold.
`
`2
`
`

`

`6.
`
`In
`
`addition,
`
`audio
`
`devices
`
`offered
`
`for
`
`sale
`
`together
`
`under
`
`the
`
`–POD Family of Marks have received widespread unsolicited media attention from national and
`
`local media outlets throughout the United States and throughout the world.
`
`7.
`
`As a result of Apple’s extensive promotion and sales of products and accessories
`
`under the –POD Family of Marks, as well as unsolicited media attention, the consuming public
`
`and the trade associate the –POD Formative for audio devices and accessories with Apple, and
`
`have identified Apple as the source of those products and accessories since prior to the filing date
`
`of the Application.
`
`8.
`
`In addition, since 2001, Apple has spent a significant amount to advertise and
`
`promote its products sold together under its –POD Family of Marks, and has sold a great many
`
`products under those marks.
`
`9.
`
`Apple’s –POD Family of Marks has been extensively publicized, and the
`
`–POD Formative as used by Apple is widely and extensively recognized by the general consuming
`
`public.
`
`10.
`
`Due to the long duration, extensive amount and nationwide reach of advertising and
`
`publicity of the –POD Family of Marks, the extensive amount, volume and geographic reach of
`
`sales of goods sold under the –POD Family of Marks, and the high degree of recognition that the
`
`family enjoys, the –POD Formative and –POD Family of Marks are famous and have been famous
`
`since prior to the filing date of the Application.
`
`11.
`
`Apple owns the following United States trademark registrations for marks that
`
`comprise the –POD Family of Marks, all of which contain the recognizable common characteristic
`
`3
`
`

`

`–POD or its plural form –PODS, and all of which are individual members of the
`
`–POD Family of Marks:
`
`Reg. No.
`
`Dates
`
`Goods and Services
`
`Class 9: Portable and handheld digital
`electronic devices for recording, organizing,
`transmitting, manipulating, and reviewing audio
`files; computer software for use in organizing,
`transmitting, manipulating, and reviewing audio
`files on portable and handheld digital electronic
`devices
`
`Class 9: Portable and handheld digital
`electronic devices for recording, organizing,
`transmitting, manipulating, and reviewing text,
`data, and audio files; computer software for use
`in organizing, transmitting, manipulating, and
`reviewing text, data, and audio files on portable
`and handheld digital electronic devices
`
`Class 9: Full line of electronic and mechanical
`parts and fittings for portable and handheld
`digital electronic devices for recording,
`organizing, transmitting, manipulating, and
`reviewing text, data, audio and video files;
`electronic docking stations; stands specially
`designed for holding portable and handheld
`digital electronic devices; battery chargers;
`battery packs; electrical connectors, wires,
`cables, and adaptors; headphones and
`earphones; stereo amplifier and speaker base
`stations; audio recorders; radio receivers; radio
`transmitters; and computer software for portable
`and handheld digital electronic devices for
`recording, organizing, transmitting,
`manipulating, and reviewing text, data, audio,
`image, and video files; computer application
`software for recording and organizing calendars
`and schedules, to-do lists, and contact
`information; computer game software; and,
`computer software for clock and alarm clock
`functionality; carrying cases, all for use with
`portable and handheld digital electronic devices
`
`Mark
`
`IPOD
`
`2,835,698*
`
`Priority date:
`Aug. 31, 2001
`
`IPOD
`
`3,089,360*
`
`IPOD
`
`3,341,191*
`
`Application date:
`Oct. 18, 2001
`
`Registration date:
`Apr. 27, 2004
`
`Priority date:
`Aug. 31, 2001
`
`Application date:
`Oct. 18, 2001
`
`Registration date:
`May 9, 2006
`
`First use date:
`Oct. 23, 2001
`
`Application date:
`Jun. 18, 2005
`
`Registration date:
`Nov. 20, 2007
`
`4
`
`

`

`Mark
`
`Reg. No.
`
`Dates
`
`IPOD
`
`3,497,047*
`
`3,741,470*
`
`First use dates:
`Jul. 17, 2002
`(Class 9)
`Oct. 19, 2004
`(Class 22)
`
`Application date:
`Jun. 18, 2005
`
`Registration date:
`Sep. 2, 2008
`
`Priority date:
`Apr. 3, 2006
`
`Application date:
`Oct. 3, 2006
`
`Registration date:
`Jan. 26, 2010
`
`Goods and Services
`for recording, organizing, transmitting,
`manipulating, and reviewing text, data, audio,
`image, and video files
`
`Class 9: Straps for portable and handheld digital
`electronic devices for recording, organizing,
`transmitting, manipulating, and reviewing text,
`data, audio, image, and video files
`
`Class 22: Lanyards for portable and handheld
`digital electronic devices for recording,
`organizing, transmitting, manipulating, and
`reviewing text, data, audio, image, and video
`files
`
`Class 9: Portable and handheld digital
`electronic devices for recording, organizing,
`transmitt